IPR2020-00158 (P.T.A.B. Dec. 16, 2020)

VLSI Technology LLC

Patent Trials and Appeals BoardDec 16, 2020

IPR2020-00158 (P.T.A.B. Dec. 16, 2020)

Trials@uspto.gov Paper 20 571-272-7822 Date: December 16, 2020 UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ INTEL CORPORATION, Petitioner, v. VLSI TECHNOLOGY LLC, Patent Owner. ____________ IPR2020-00158 Patent 7,523,373 B2 ____________ Before THU A. DANG, BART A. GERSTENBLITH, and KIMBERLY McGRAW, Administrative Patent Judges. GERSTENBLITH, Administrative Patent Judge. DECISION Denying Petitioner’s Request on Rehearing of the Decision Denying Institution of Inter Partes Review 37 C.F.R. § 42.71(d) IPR2020-00158 Patent 7,523,373 B2 2 I. INTRODUCTION Intel Corporation (“Petitioner”) filed a Request for Rehearing (Paper 17, “Rehearing Request” or “Req. Reh’g”) of the Decision Denying Institution of Inter Partes Review (Paper 16, “Decision” or “Inst. Dec.”). Petitioner also filed a request for the Precedential Opinion Panel (“POP”) to review the Decision (Paper 18 (Notification of Receipt of POP Request)), which the POP denied (Paper 19 (Order)). For the reasons provided below, Petitioner’s Rehearing Request is denied. II. ANALYSIS A party requesting rehearing bears the burden of showing that the decision should be modified. 37 C.F.R. § 42.71(d). “The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply.” Id. When rehearing a decision on a petition, we review the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). Petitioner’s Rehearing Request raises two primary arguments: (1) that the precedential Board decisions in Apple Inc. v. Fintiv, Inc., IPR2020- 00019, Paper 11 (PTAB Mar. 20, 2020) (precedential), and NHK Spring Co. v. Intri-Plex Techs., Inc., IPR2018-00752, Paper 8 (PTAB Sept. 12, 2018) (precedential), were wrongly decided and should be reviewed by the POP; and (2) that, even under the Fintiv/NHK Spring framework, the Board erred by failing to place sufficient weight on (a) the identity and prior conduct of VLSI Technology LLC (“Patent Owner”) and (b) Petitioner’s argument that only a subset of the claims challenged in the Petition (Paper 3) will be IPR2020-00158 Patent 7,523,373 B2 3 presented and resolved in the related district court trial. See, e.g., Req. Reh’g 1–2. First, with respect to whether Fintiv and NHK Spring were decided correctly, that issue was raised in Petitioner’s POP request, which was denied. See Paper 19. Second, on the record before us, we do not believe that we incorrectly weighed the identity and prior conduct of Patent Owner or the potential difference in claims challenged in the Petition and asserted in the related litigation in deciding whether to exercise our discretion to deny institution pursuant to 35 U.S.C. § 314(a). In our Decision, we considered Petitioner’s allegations regarding Patent Owner’s identity and conduct under Fintiv factor 6 (other circumstances that impact the Board’s exercise of discretion, including the merits), and we noted Patent Owner’s position that Petitioner was improperly attempting to re-litigate issues that were the subject of an antitrust suit pending in the Northern District of California. See Dec. 13. We further noted that, “[e]ven if Petitioner’s contentions are true, Petitioner has not shown these contentions will ‘avoid[] adjudication of Intel’s validity defenses” in the related Western District of Texas litigation, in which trial was scheduled to occur well before the deadline for a final written decision in this proceeding. Id. at 13–14. In light of the record at the time, we found that Petitioner’s arguments did not weigh against exercising discretion to deny institution. Id. at 14. Additionally, contrary to Petitioner’s assertion, we did not ignore Petitioner’s argument that only a portion of the claims challenged in the Petition might be asserted at trial even if we did not expressly indicate our consideration of Petitioner’s position. See Req. Reh’g 6, 13–15. In the Preliminary Reply, Petitioner asserted that Patent Owner could not litigate IPR2020-00158 Patent 7,523,373 B2 4 “every currently asserted claim in a time-limited trial” and that it is “likely” that Patent Owner would drop claims before trial in the Western District of Texas. Pet. Prelim. Reply 7. This argument, however, was not persuasive because it was based on speculation. Specifically, the record did not show when, if at all, Patent Owner would narrow the claims asserted in the related litigation. Based on the record presented, we considered the overlap between the claims challenged in the Petition and those asserted in the related litigation in addressing Fintiv factor 4 (overlap between issues raised in the petition and in the parallel proceeding). Dec. 10–12. In particular, at the time of our Decision, we found that “on the record before us, each of the claims challenged via petition also is included in Petitioner’s Final Invalidity Contentions, with the exception of dependent claims 7, 10, and 15.” Id. at 12. And, we noted that Petitioner did not argue that difference as a reason not to exercise our § 314(a) discretion to deny institution. Id. Accordingly, having considered Petitioner’s Rehearing Request, Petitioner has not persuaded us, for the reasons discussed, that our Decision should be modified. III. ORDER For the foregoing reasons, it is: ORDERED that Petitioner’s Rehearing Request (Paper 17) is denied. IPR2020-00158 Patent 7,523,373 B2 5 For PETITIONER: Benjamin Fernandez Mary Sooter WILMER, CUTLER, PICKERING, HALE AND DORR LLP ben.fernandez@wilmerhale.com mindy.sooter@wilmerhale.com For PATENT OWNER: Kenneth Weatherwax Bridget Smith Flavio Rose Edward Hsieh Parham Hendifar Patrick Maloney Jason Linger LOWENSTEIN & WEATHERWAX LLP weatherwax@lowensteinweatherwax.com smith@lowensteinweatherwax.com rose@lowensteinweatherwax.com hseih@lowensteinweatherwax.com hendifar@lowensteinweatherwax.com maloney@lowensteinweatherwax.com linger@lowensteinweatherwax.com